Tag Archives: Domain name

brand name dispute

Brand Name Dispute

brand name disputeBrand name disputes occur all too frequently because the trademark registers are increasingly cluttered and it can be difficult to find available names. You may be found using a name for one purpose, but as soon as you use it for another purpose you could actually be facing a brand name dispute.

When you use a name or other brand symbol that someone else claims to have a better title to, or if you find someone using confusingly similar branding to yours and want to challenge it, you have a dispute to deal with.

As it is not widely appreciated that it is necessary to check the trademark registers before using a name, brand name disputes are one of the most common ones we see.  For example:

  • A client secures their desired domain name, sometimes spending thousands of pounds, only to receive notice that its use infringes on someone else’s trademark rights. The rights to use of a name stem from trademarks not from domain or company name availability.
  • If a domain name is registered that is deemed to be a registration in bad faith, then you could be challenged to return the domain to its rightful owners. For example, even if you have managed to buy a domain name for the name cocacolaclothing.co.uk for your online clothing business it does not mean you are entitled to use that name to sell your line of clothing.
  • A logo is registered as a UK trademark, but an EU trademark owner believes it infringes on their word trademark and sends a cease and desist letter requiring the withdrawal of all products bearing that logo.

Sometimes someone may simply be using their own name in the business, but this may conflict with a registered trademark. For example, if your name is Paul Smith and you are a fashion designer, you would have a potential dispute to deal with if you decided to set up shop as Paul Smith, given that the trademark rights of the famous designer Paul Smith in fashion and clothing would block you.

 

Resolving the dispute

Brand name disputes usually take one of three forms:

  • Either the dispute is in relation to registered trademarks – these may involve opposition to a trademark application or a cease and desist letter threatening court proceedings.
  • Brand name disputes can also occur if someone is using a name but hasn’t registered it as a trademark. In that case, they would argue ‘passing off’ and possibly threaten court proceedings. Or if you have applied to register a trademark they may either oppose your trademark application based on their earlier rights or apply to cancel your registration if you have already registered the mark.
  • Domain name disputes – now whether or not the brand name is a registered trademark, and no matter how strong or weak your position may be, the starting point for addressing any brand name dispute is to get specialist advice so as to decide how best to respond.

You may need to change your name and will need to use someone who both understands brands and names.  It is so important to use a trademark expert who ‘gets’ branding rather than simply asking a brand agency to help you. Leaving the legal dimension till after the choice has been made could expose you to a further dispute, or leave you with a name that can’t uniquely belong to you.

Court Rules on Playboy Domain Name Dispute

IPEC dismisses Playboy domain name claim

Court Rules on Playboy Domain Name DisputeThe Intellectual Property Enterprise Court has published its judgment in Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC). The court dismissed the claimant’s claim for declarations of non-infringement, groundless threats and entitlement to retain a domain name.

The claim arose out of the claimant’s ownership of the playboy.london domain name. The defendant, as owner of the world famous PLAYBOY trade marks, relied on a decision under the Uniform Domain Name Resolution Policy (UDRP) stating the domain should be transferred to it. The court held it did not have the authority to overturn the UDRP decision except in the case of manifest error, which was not relevant to this claim.

Evidence adduced at trial showed the claimant intended to use the domain name to chronicle the childhood and adolescence of his children. Access to the website would be restricted to users who had been given login details by the claimant. Accordingly, the court found there could be no trade mark infringement because the claimant was not selling any goods or services from the website. However, the judge ruled the claimant could not rely on the groundless threats provisions of the Trade Marks Act 1994.

The claimant claimed his use of the word PLAYBOY in the domain name was an ironic reference to himself. The judge concluded this irony relied on the reputation and goodwill in the PLAYBOY mark. Accordingly, the claimant’s use of the domain name would lead to passing off.

The court held it did not have the power to overturn the UDRP decision and the application for a declaration was an attempt to circumvent the court’s lack of jurisdiction. The judge further reasoned that granting a declaration stating there had been no trade mark infringement would not serve any useful purpose, since a similar declaration in relation to passing off could not be made. On this basis the claim was dismissed.

IP Law Makes Waves In Piracy

Online Piracy Doesnt Hurt SalesOr Does ItShireen Smith, intellectual property law expert and founder of London based law firm Azrights , has expressed her concern about the ongoing battle the games industry faces over piracy issues.

Writing in MCV (The Market for Computer and Video Games) 4 December issue, Shireen discusses how the digital revolution has bought IP law to the fore of every modern business and how the computer and video games industry is “experiencing an intellectual property revolution.”

UK games companies on average grew by 22% between 2011 and 2013 according to Ukie with digital game sales larger than digital video and music sales combined.  Given the commercial significance of the games market, Shireen believes that the computer and video games industry need to take a more serious overview of intellectual property law.

Commenting on Nintendo’s recent high profile legal breakthrough against circumvention devices, Shireen explains that IP issues are threatening large corporations as well as entrepreneurial firms.

“In an ongoing legal battle, Nintendo has made a breakthrough against circumvention devices with the case reaching Europe’s highest court in January 2014.”

“The ‘first instance criminal decision against the defendant puts an international spotlight on what is the legitimate use of devices such as mod chips, which can have non-infringing uses as well as infringing ones.”

“It is likely that similar cases across Europe will soon follow suit as anti-piracy campaigns continue to grow.  It also means that national courts in all EU member countries have a framework to assess whether security measures are protected – a huge success for the international computer and video games industry.  The high profile nature of the case has EU-wide implications on independent software developers, as well as gamers.”

Shireen, who recently launched her new book Intellectual Property Revolution  also provides some guidance for smaller businesses.

“Entrepreneurial businesses may have some misconceptions regarding the approach to IP law.  The advice in employing an IP expert is the earlier the better.  Nowadays SMEs are exposed to a global audience in ways that simply did not occur in the industrial era.  We have more businesses today than we’ve ever had before.”

“In a market which is constantly flooded with innovative concepts, smaller businesses can find themselves at a serious risk of losing out if IP infrastructure is not put in place.  There is greater risk in both the short and long run as smaller businesses often don’t have the time or resources to overcome a legal setback.”

It is not just the video and computer games market that is effected – the intellectual property revolution is happening across industries.

“In the fashion industry, the Kering group (who own Gucci), have recently challenged Alibaba on piracy issues.  There is also ongoing problems faced by the music and film industries with illegal downloads and streaming.”

Shireen’s MCV article titled “IP law clamps down on pirates” can be found here.

Azrights website

Azrights on YouTube

Azrights on Twitter

Intellectual Property Revolution on Amazon

Games Industry Must Ensure it Takes IP Law Seriously

Facebook users mourning the removal of scrabulousAccording to Ukie , the trade body for the games and wider interactive entertainment industry, the UK games industry was worth over £3.9 billion in consumer spend in 2014 and the sector is expected to grow at an annual rate of 8%.

The games industry is relatively new and therefore 95% of companies are microbusinesses or SMEs.  Leading intellectual property (IP) lawyer Shireen Smith thinks that many of these companies could be at risk of losing out as a result of an IP dispute, if they don’t take the necessary steps to protect themselves.

“If names are chosen without involving a trade mark expert, the business is at risk of losing out.  A poor choice of name can lead to a constant loss of value or difficulty in securing registration either in the UK or in other countries.

“An IP expert should always be consulted at the early stages of launching a new business or product.

“Otherwise, as soon as a new business starts up, the business owner might receive notice that it is infringing on another brand.  This can have serious consequences for those that have invested significantly in their branding and search engine optimisation.  Sadly for some, they don’t have the time or resources to overcome such a setback.”

Shireen Smith, who is the founder of London-based law firm Azrightscontinues to give an example.

Scrabulous was an app, created by two Indian brothers, which allowed people to play a Scrabble-like game online with friends anywhere in the world.  It was a huge hit – attracting 600,000 users per day – when in 2008, Hasbro, the owner of the Scrabble trademark, shut it down because their name suggested to the market that this was a similar game to Scrabble.  As trademark law helps to prevent piggybacking off the success of others’ brand, Scrabble was able to get Facebook to pull the Scrabulous app even though it was extremely popular.

“The founders had even applied to register a trademark for their name, clearly unaware of the wide scope of protection that trademarks give.  Had they taken advice before using the name they would have realised the choice was unwise.

“The fact that their app had gone viral did not stop Facebook from simply removing it.  This paved the way for Zynga to create what is now a highly successful app: Words with Friends.  The brothers’ advantage of being the first to build a Scrabble-like app on Facebook was lost, and we will never know how big Scrabulous would have been today if it had opted for a better name.”

Shireen Smith has recently launched a new book called ‘Intellectual Property Revolution’, published by Rethink Press which is all about how to successfully manage IP assets, protect brands and add value to your business in the digital economy.  It is written in plain English and is helpful for business owners and ‘brand guardians’.

A video explaining more about how the digital economy is changing IP can be found here

 

Azrights website
Azrights on You Tube
Azrights on Twitter

 

Leading IP Law Firm Goes Digital

buying the sucks.com version of your brandIn order to raise the profile of her London-based firm Azrights, her book and the importance of intellectual property (IP) as a whole, lawyer Shireen Smith has put her faith in video.

She enlisted the help of London-based video production company Element 26  to produce an animated film  that explains how essential it is for small businesses to protect their IP.

Azrights specialises in helping owners of businesses in the digital economy to use legal frameworks to create intangible assets.  When properly protected, these assets can often become more valuable than the products or services that the business sells

Shireen Smith said, “Lots of people don’t understand the value of IP because they can’t see it or hold it.  To address this, we asked Nathan Haines, Managing Director at Element 26, to produce a video to increase understanding of this vital area of the law.  In the digital economy, IP is changing rapidly and small business owners need to prioritise it to avoid pitfalls.

“By educating business people of the importance of IP law, the video Nathan pro
duced encourages them to approach Azrights for advice or to read my recently launched book ‘Intellectual Property Revolution’.”

Such was the interest in ‘Intellectual Property Revolution that it was a bestseller in its category on Amazon before it had even been launched and continues to be so a week after the launch.

Written in plain English, it explains to business owners and brand ‘guardianshow to successfully
manage IP assets, protect brands and add value to businesses in the digital economy.

Shireen Smith adds, “The new currency in our digital economy is information, know-how, brands, systems and data. Whether people are building a brand identity, launching a new product or service worldwide, or even a start-up business, they’re also creating intellectual property.

“The value and safety of intellectual property has become more important than ever before.  Do it right and the intangible assets you create could be worth more than the products or services themselves.  Do it wrong and you could miss vital opportunities, have your true value stolen or find yourself on the wrong side of an intellectual property dispute.

“Once IP is on the business owners’ radar, it’s crucial for them to consult an IP lawyer in the early stages.  So often, people in business commit to brand names, website URLs and costly designs before speaking to an IP specialist, only to find that their so-called assets lack value.  The video that Azrights had produced will educate start-up owners before they reach this stage.”

Nathan Haines said, “We’re thrilled that the video we produced has been such a success for Shireen and the team at Azrights.  At Element 26, we believe every business has a special story which makes them unique.  As a company we make it our mission to understand our clients’ objectives by collaborating early on in the process, which ensures that the messages to be conveyed are tailored to their specific target audience, not just any audience.

“When Shireen asked us to work with her on the production of her film, we were very excited because animation is more vibrant and colourful than the more traditional interview-led videos.

“By commissioning a film, Shireen is leading by example and has proven that she really believes in the importance of creating intellectual property.  We are proud that this film will be one of the intangible assets that contributes to Azrights’ ongoing success.”

The video, which explains more about how the digital economy is changing IP, can be found on YouTube here.

 

 

Azrights website

Azrights on You Tube

Azrights on Twitter

Element 26

Intellectual Property Revolution on Amazon

FTC ruling on blog paid reviews

Intellectual Property Value – Do You Need Specialist Skills to Value IP?

What Is Your IP Worth?As intellectual property (IP) becomes more recognised as an asset class, interest in it is increasing – so much so that apparently according to the IPKAT Hong Kong property surveyors have been trying to break into assessing the intellectual property value in a business.

They recently called upon overseas bodies (for example, the Royal Institution of Chartered Surveyors to promote the virtues of having surveyors perform IP valuations.

As the IPKAT says, the question is whether

  1. IP valuation is a sub-category of business valuations or a self-contained professional endeavor; and
  2. (ii) in either case, to what extent must an IP valuation professional understand the legal context of IP rights?

The starting point is to consider what we mean by IP

What is IP?

The term IP is generally associated with registrable rights like trademarks, patents and designs.  However, SMEs also have many non registrable IP issues to consider, such as copyright, know how, trade secrets, database rights, organisational knowledge and more.

Unless an SME takes advice to identify, manage, and protect its IP assets it could be seriously exposed because intangibles are a poorly understood asset class.

There is no one size fits all when it comes to determining a business’s risks and opportunities. Even  two businesses in the same industry, with similar business model, may have different issues to address depending on how they develop their businesses and what contracts and other arrangements they have in place, For one business copyright may be the critical asset, while for another it may be the database or a patent.

They will not necessarily be equally desirable to an investor as their value on exit would be impacted by a number of factors unique to each business.

Why have an IP valuation?

One issue a valuation will consider is whether there is key IP underpinning a company’s competitive advantage. If so, another question is whether that competitive advantage is adequately protected.

Banks and investors may accept IP assets as valuable security to finance an SME’s growth if the business can demonstrate that those IP assets underpin revenues and forecasts, and impact cash flow.

How the strength of the IP asset is critical

A fictional example may help convey how IP works.

Say a company has developed an innovative solution that becomes well known in its industry. That competitors will copy a good idea is inevitable. So, if a company’s asset isn’t protected with a patent or other barrier to entry, it is more vulnerable to copy cats.

However, where there are no patents to protect the product, it is a mistake to assume there is little you can do to prevent a competitor stealing market share. You may not be able to stop them creating similar products but you may be able to protect your competitive position and create barriers to entry through the name you choose for the product.

The name is a potential barrier to entry because it can stop competitors using similar ones to identify their offerings – but only if it is a name that the business can uniquely use.

If the business chooses a generic name (that is, one that describes what the product does, rather than an actual name), the name will not be capable of protecting the company’s asset. This is so even if the company registers that name as a trademark combined with a logo. Such a registration would effectively only protect the logo where the name is generic.

So the upshot is that the business has a product that gives it a competitive advantage. It has a valuable asset, but not as valuable as it would be if the name was capable of stopping competitors stealing market share when providing ‘me too’ solutions.

That not all names are equally effective at containing IP value is not generally well understood

Shifting value of IP

IP value is rarely static. Intellectual property rights can change in value over time for a variety of reasons. For example, when you first patent something, it’s possible you have a unique solution to a problem so that your patent provides a strong competitive advantage. But then as other solutions to the problem emerge, the value of your patent may be reduced. On the other hand, if you have successfully marketed your product, despite your patent becoming less critical to your competitive advantage, your trademark may have gained value as your name recognition has increased.

So, failing to give a product a distinctive name that is capable of functioning as a trademark, or not checking whether other people’s rights might prevent use of the chosen name long term impacts the value that is generated, and that would inevitably depress the value of your IP.

IP value is impacted by the choices you make

The above example is designed to illustrate how the IP in question, or the choices you make impact IP value. You need to be ready to make changes if needs be. However, names are not the sum total of IP. There are so many other issues that impact IP value.

There are a number of IP actions required in order to build value and wealth. Implementing effective contracts is a hugely important, but misunderstood aspect of IP protection.

Because it is never possible to foresee what problems and scenarios might arise for a business in the future, it is prudent to secure its IP rights to the fullest extent, so the business has adequate protection to protects its position in the market.

Therefore, identifying IP rights, and protecting and managing them, is essential for any ambitious business.

Conclusion

Clearly IP valuation is not an area in which surveyors would have appropriate transferable skills.

IP and business are closely intertwined. In practice, you need to take both into account. That is why it requires the combined skills of business and IP experts to get the most effective IP valuation and strategic advice.

In a future post, I will explore the different methods for valuing IP.

Naming your start-up: tips for lasting success

Naming your start-upThe notion that the main consideration when choosing a new brand name is its availability as a .com domain is widespread. What is less well known is that you may not be free to use your chosen domain name if the name would infringe on someone else’s trademark rights.

Countless start-ups regularly trip up because they do not realise they need a legal opinion to assess whether the name is free to use. So, there is no point paying substantial sums buying domains as one early stage business owner I met did a while ago. He had paid £10,000 for a .com domain only to be challenged by the owner of a similar trademark when he began using it for his new business. The disruption and financial consequences were an irritating distraction for him. It was completely avoidable. Had he consulted a trademark lawyer before choosing a name he could have avoided this set back. However, many business owners are reluctant to pay for a professional opinion, regarding this as an unnecessary expense. Ironically, this particular business owner, then went out and bought another domain name, again without having any checks, and only turned to us to register it for him. He was lucky that this time there were no problems with the name.

As this is a topic of interest to me, I was amazed when I came across a recent blog post from the CEO and co-founder of “Skilljar” which focused purely on whether the .com was available when choosing a name. In that case the business was changing its name, and surely this is one time when you really don’t want to get it wrong. The disruption of changing names 3 times would be so distracting and wasteful for the business.

Based on her experience of not being able to purchase the .com to the name she was using – Everpath – Sandi Lin decided to abandon use of the name, Everpath (even though her company held every other domain variation, including the important .net) and set off in search of a new name for which the .com domain would be available.

Using the crowdsourcing platform, Squadhelp, she searched for available domain names, and settled on the name “Skilljar”. She was convinced the crowdsourcing site would minimise the time involved searching for a new name. Based on over 800 submissions, she was inspired to pick a new name. Using ‘skill’ and ‘master’ as roots to search for names on Sedo, a domain name auction site, for ‘Buy now’ listings she then found several names that were available to buy within a maximum price limit of $5,000. She also checked for social network availability and searched Google for similar results. So it was that “Skilljar” was born.

What she omitted to do was to check whether the name Skilljar was too similar to a trademarked name in the USA and other parts of the world.

The correct way to choose a name is to do some Google research, check that the desired domain is available, and then get a legal opinion on the name. If the results are favourable, then register a domain as well as a trademark. Trademarks are the way to stake your claim to a name. Even though it is not necessary to register a name to use it, registration gives you far better rights over a name, and puts you in a stronger position if someone else starts using the same name (which they are more likely to do if you haven’t put them on notice of your rights over the name by registering it as a trademark).

So, while Lin is advocating crowdsourcing as a quick and relatively cheap approach which took her only 8 hours and cost the comparatively modest sum of $2,195, it is important that others looking to find a new name appreciate that this expense would be completely wasted if someone else had trademark rights over the name.

As a trademark lawyer I find her decision to rebrand questionable and surprising, particularly as at no point did Lin even consider the trademark implications of her proposed name. She was willing to forfeit all brand confidence to date, and choose a new name, and did not first think to check that the new name would be available for her to use.

Whilst arguably an inconvenience to have to first find out whether someone else has trademark rights over a name, start-ups are in danger of spending thousands of pounds more on enforced rebranding, and on domain names that they are not free to use.

So, don’t just focus on a brand name’s web-friendly characteristics. Avoid a lawsuit for trade mark infringement, and make sure you are using a name you can own.

Your Brand and Your Domain Name

Choosing names that say what your business does on the tin may not be the best approach to choosing domain names online, despite it being an approach many businesses have adopted in the past.

Often, it seems like a good idea to follow in the footsteps of those who have gone before, taking what looks like the tried and tested approach.

However, whilst in the past descriptive domain names may have given businesses certain advantages online, recent changes to Google’s algorithm at the end of 2012 have done away with many of these previous benefits.

The early days of the Internet

When the Internet was young, and not unlike a small village with just one toy shop, one grocery store, one pet store, and so on, descriptive names or phrases were popular for domain names. People searching for these pioneering online suppliers could readily find them by using descriptive keywords to search for them, and search engines made the websites easy to find.  In those early days if you wanted to find a business, chances are you would just type into your browser Books.com when looking for books or Hotels.com to find somewhere to stay and so on. Nowadays, less than 25% search in this way.

Google’s algorithm

As online business took off, and nearly every business put up a website, the online space became overcrowded.  A high ranking in search results grew to be the key objective of many businesses, as more and more of us turned to Google whenever we wanted to find a product or service, and so the practice of using descriptive domain names became entrenched because Google continued to give a preference to domain names describing what their potential customers were searching for. For example if you were called Jobs.com, you would be more likely to show up in the top results, assuming your website was otherwise well designed.

However, this led to marketers using “exact-match domain names” as a way to cheat the system, pushing low quality websites up in search result listings. With Google’s recent changes to its algorithm, Google has made it harder for sites to cut corners, ensuring that the focus is on quality and relevance. Today, Jobs.com does not even make the top 10 search results for a search for ‘Jobs’.

Brands over descriptive

Selecting descriptive names has never been good practice in branding, as these names do little to set you apart from competitors, but now with Google’s alterations to its algorithm, this method of choosing names is even more inappropriate.

Even before this algorithm change, the online environment that influenced people’s practices has been quietly moving on away from descriptive names, with users searching online being much more likely to opt to visit sites with recognised brand names. Rand Fishkin, a renowned online marketing expert and co-founder of SEOMoz, which helps websites get found online, summed up the point concisely in a recent blog post: ‘Unbranded sites may be losing significant amounts of traffic vs. their better-branded competition. Choosing a “keyword-match” domain seems like a worse decision than ever’.

We couldn’t agree more, and encourage readers to take care when choosing a domain name for products and services.  Choosing a distinctive name comes with a whole host of benefits, not least of which is the opportunity to own it through trade mark registration. It is also easier to deal with competitors who seek to copy your domain names. Do get in touch if this resonates with you, and you want to find out more about branding your business.

NinjaVideo.net, TVShack.net and other Domains Seized

Last week nine websites that allowed people to download or stream TV programmes and films for free were closed down (see here), their domains seized by the US federal government. These sites included tvshack.net, Movies-Links.tv, FilesPump.com, Now-Movies.coms along with five others.

These sites were  targeted as part of a new initiative, aimed at combating Internet counterfeiting and piracy, and were selected because they allowed visitors access to films such as Toy Story 3 and Prince of Persia: The Sands of Time, which have only recently been released in the cinema.

Many of these sites allowed viewers to watch films taped by camcorder in the back of cinemas, in poor quality and often with audio tracks out of sync with the video. It is argued that websites like these cause considerable damage to the film industry, as people who might otherwise pay to see films in the cinema, are able to watch them for free online.

John Morton, the assistant secretary from the U.S. Immigration and Customs Enforcement (I.C.E.) explained the new initiative, saying, “We are dedicated to protecting the jobs, the income and the tax revenue that disappear when organized criminals traffic in stolen movies for their own profit”. Kevin Suh, Vice President of Content Protection for the Motion Picture Association of America, called this action the “largest takedown of illegal movie and television websites in a single action by the federal government” (See here) The government has decided to  severely crackdown on all websites that show pirated American movies, and is prosecuting the owners of these sites. They say that if any of these sites resurface, they will again take action. The US government is primarily targeting websites distributing cinematic content, but may also begin to target sites enabling illegal game downloads.

A major difficulty associated with these efforts is that the nature of the Internet makes it very difficult to control what the public access. Whilst the U.S. Government may have taken control of these domains, the websites can just pop up  at a different location using a different domain name. In fact, TVshack.net have already moved their website to another domain, TVshack.cc. So, while this move is effective to some extent, it is unlikely to be successful in eliminating online copyright infringement by itself.

In trying to control access to content on the Internet, the US Government seems to be fighting a losing battle. As with many similar efforts against the distribution of drugs, and unlawful music downloads, trying to stop illegal movie downloading is proving to be a near impossible task.

Copyright infringement is clearly a problem that everybody is trying to find the best way of tackling. In the UK Ofcom is currently consulting on how to give effect to measures introduced in the Digital Economy Act 2010 aimed at reducing online copyright infringement. It’s new draft code proposes that copyright holders could require Internet Service Providers (ISPs) to write to subscribers telling them their accounts have been associated with copyright infringement. ISPs will need to keep lists, and provide lists of repeat infringers in anonymised form to right holders on request. Personal details can then be obtained from the ISPs using a Norwich Pharmacal order. The consultation is open till 30 July.